Invalidation of a trademark registration

This article will focus on the topic of invalidation of trademark registration. The revocation of trademark registration was explored in detail in one of the previous articles.

Grounds for invalidation of a trademark registration

Any person who believes that the registration of a trademark has been done in violation of the provisions of the Law on Marks and Geographical Indications with respect to natural and legal persons, as well as the trademark has been registered in violation to the absolute grounds for refusal of registration provided for in Article 11 of the LMGI is entitled to file a request for invalidation of the registration of that trademark.

The registration of a trademark can be invalidated where:

• the mark is registered in violation of the relative grounds for refusal provided for in Article 12 of the Law on Marks and Geographical Indications;
• there is an earlier right of another person, that earlier right enjoying protection under another law, namely: the right to one’s name and likeness; copyright; a plant variety or animal breeder’s right; an industrial property right;

Exceptions:

• Where the mark has been registered in violation of Article 11, Para. 1, p. 2, 3, or 4, the registration may nevertheless not be declared invalid if the proprietor proves that, as a result of the use made of it, the mark has acquired distinctive character in relation to the goods or services for which it is registered.
• Where the trademark is registered in violation of Article 11, para. 1, item 12, the registration shall not be declared invalid if the holder is a registered user of the geographical indication contained in it previously registered under the Law on Marks and Geographical Indications.
• Where the trademark is registered in violation of Article 11, para. 1, items 12, 13 and 14, the registration shall not be declared invalid if the proprietor limits the list of goods for which the trademark is registered to those corresponding to the specification of those registered under the legislation of the European Union or international agreements under which the European Union is a party, geographical indications, traditional specialties, and traditional wine names.
• Where the mark has been registered in violation of the Relative Grounds for refusal provided for in Article 12 of the Law on Marks and Geographical Indications the registration shall not be declared invalid if the earlier mark has not been used within five years from its date of registration.
• Where the trademark is registered in violation of Art. 12 of the Law on Marks and Geographical Indications in connection with Art. 12, para. 1, v. 2, para. 3, 4, and 7 and Art. 36, para. 3, item 2, the registration shall not be declared invalid if the consent of the person with the earlier trademark, respectively with the earlier right is presented in the invalidation proceedings.
• Where the trademark is registered in violation of Art. 12 of the Law on Marks and Geographical Indications in connection with Art. 12, para. 6 the registration shall not be declared invalid when:
• the agent or the representative justifies his actions, or
• the request was transferred to the actual holder at his request.

It is important to note that the request for invalidation of a trademark can be filed against all goods and/or services as well as against some of the goods or services for which the trademark is registered. In the event that the request is filed against a part of the goods or services, the registration shall be declared invalid only for the respective goods or services selected.

When can a request for invalidation of a trademark registration be filed?

A request for invalidation of a trademark registration may be filed throughout the whole term of the trademark registration.

How shall a trademark invalidation request be filed?

The request for invalidation of trademark registration shall be filed at the Patent Office of Republic of Bulgaria in one of the following ways, namely: directly, by mail, fax, or electronically through the electronic portal of the Patent Office.

What must the request contain in order to be admissible?

The request for invalidation of trademark registration shall contain:

1. name, surname and family name of the individual, citizenship or country in which he/she has a permanent address, as well as correspondence, fax or electronic address (e-mail);
2. in the event of the applicant being a legal entity, his/her name and type, company address and registered office, as well as correspondence, fax or e-mail address must be present;
3. number and name of the trademark to which it refers as well as the goods and services against the invalidation of the trademark is sought;
4. data on the application under Art. 52, para. 1, item 2, when the request is under Art. 36, para. 3, item 1 in connection with Art. 12, para. 4;
5. a detailed statement of the reasons for the request;
6. justification of legal interest, if required;
7. motives.

The invalidation of trademark registration shall be accompanied by:

1. a document for paid state fee, if the payment is by bank transfer;
2. a power of attorney when necessary;
3. proofs where necessary;
4. a court certificate for instituted proceedings or entered into force court decision when the request is under Art. 12, para. 5.

The request must be submitted in duplicate, except where it is submitted electronically by a qualified electronic signature.

Stages of the proceedings for the request for invalidation of the trademark registration

Upon receipt of a request for invalidation of trademark registration, order for the appointment of a panel shall be issued within two days to examine it and within one week the chairman of the panel shall check the admissibility of the request. In the event that any deficiencies are found, the applicant has 14 days to remedy them. If the request is inadmissible, as the deficiencies have not been remedied within the time limit allowed, a decision shall be taken not to open the proceedings. In the event that the request is admissible, a formal regularity check of the request shall be carried out within seven days of the admissibility check. If any deficiencies are found, the applicant shall be given a one-month period for their removal. If the deficiencies are not remedied within the time limit, a decision shall be made to terminate the proceedings. Within seven days after the formal regularity check of the request has been acknowledged, one copy shall be sent to the proprietor of the trademark right, with the proprietor having a period of two months for objection. The objection, if any, shall be sent to the requester, together with the evidence submitted, where the requester is provided with a term of one month for an opinion. If within one month the requester submits an opinion, it shall be submitted to the proprietor of the trademark for a reply within one month of the communication, provided that it presents new facts, circumstances, and/or evidence relevant to the dispute. Within three months of the completion of the collection of all the evidence and materials on the request, a decision shall be taken to invalidate the registration of the trademark in whole or in part or to reject the request in the event that it is unfounded. The parties shall be informed of the decision, which shall be communicated to them within two days of its adoption and shall be implemented within one month of its entry into force.

The decision may be appealed before the Administrative Court – the City of Sofia within two months from its notification.

It is important to note that in trademark invalidation proceedings, the proprietor of the trademark right has the right to ask the requester to provide evidence of genuine use of the earlier trademark in relation to the goods or services for which it is registered during the five years preceding the date of filing the request, or evidence that there are good reasons for not using it, provided that the earlier trademark was registered not less than 5 years before the date of filing of the request. If the proprietor of the trademark right requests proof of genuine use of the earlier trademark, the requester shall be given two months to produce evidence. If within the time allowed, the requester submits evidence, it shall be provided to the proprietor of the trademark for an opinion within one month of the communication. Where no evidence of the use of the earlier trademark is presented, the dispute’s division shall draw up a decision to leave the request for invalidation without consideration. Where the earlier trademark was used only for a part of the goods or services, the request shall be considered in relation to those goods or services. The decision shall be taken by the President of the Patent Office or by a Vice-President authorized by him.

Legal effects of invalidation of a trademark registration

Invalidation of registration shall be effective as of the filing date of the application for registration of the trademark. The invalidation of registration shall not affect any enforced court decisions concerning infringement insofar as they have been executed prior to the invalidation as well as license agreements executed prior to the invalidation unless otherwise agreed.

Due to the above-mentioned peculiarities, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when preparing and submitting a request for invalidation of trademark registration. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of a request for invalidation of trademark registration, as well as in representation in the procedure for invalidation of a trademark registration by providing professional advice and preparation of all necessary documents. The team of the law firm of Krassimira Kadieva will gladly assist in the trademark invalidation proceedings in the event that a request for invalidation of a trademark has been filed against your trademark when you are the proprietor of a national trademark, as well as a European Union trademark registered at the European Union Intellectual Property Office.

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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the invalidation of trademark registration. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP lawyer in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.